Bilicki LawHome / Bilicki Law / Intellectual Property Counselors2020-06-02T16:47:41Zhttps://www.bilickilaw.com/feed/atom/WordPressOn behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=493192020-05-07T15:03:30Z2020-05-07T15:03:30ZWhat is a technological invention?
According to the United States Patent and Trademark Office (USPTO), a technological invention is any invention that:

Produces a useful, concrete or tangible result.

Is tied to a particular machine or apparatus.

Transforms a particular article into a different state or thing.

For instance, if a company's process is computer-oriented, they may hire someone to develop the front end or back end of an app that makes the process work. Often, apps meet the definition of technological inventions, qualifying them for a patent.
The value of language in labeling technological inventions
If businesses want their inventions approved by the USPTO, they must make sure their wording is precise. That means they should highlight the invention itself rather than discussing the business process it’s used in. Typically, when patent examiners look at these applications, they want to see that companies are trying to improve the invention they made rather than patenting a fundamental economic process. Luckily, an attorney can help companies draft a patent application with the technical language they need.
Wording makes a difference
When companies have a process that makes them stand out, they want to do everything in their power to keep it. But due to certain government barriers, many business owners may fear that those processes could easily fall into the hands of competitors. By framing and wording applications the right way, companies are more likely to get the patent protection they need.]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=493132020-06-02T16:47:41Z2020-05-06T13:25:33Zannul the trademark. Adidas ultimately lost the case. A European intellectual property lawyer says the company didn't provide ample evidence that consumers identified Adidas' brand logo. However, the company says the EU court's ruling was limited and that the outcome of the case has no impact on the broad scope of its brand identity.
Reportedly, this is not the first time Adidas failed to protect its trademark. Back in 2003, it lost a legal dispute with Fitnessworld, a Dutch company with a similar two-stripe design. Adidas says it's "disappointed" with the court's ruling. However, the company says it's still examining its implications.
Other well-known brands face challenges across the EU
The German sportswear company isn't the only one facing brand challenges. In fact, Supermac, a fast-food chain based in Galway, Ireland, persuaded the EU Intellectual Property Office (IPO) to stop McDonald's from using its Big Mac trademark, allowing Supermac to expand across the United Kingdom and other parts of mainland Europe.
Protecting brands overseas is challenging
As businesses grow, many may wish to expand their products or services across the globe. But Adidas' battle with the EU goes to show how easily trademarks can get stripped away from companies. If companies like Adidas and McDonald's can't protect their brands overseas, you may be wondering how you will be able to protect your brand when going global. That is a valid concern.
According to IP Watchdog, the United States was ranked #1 in IP rankings overall, followed closely by the United Kingdom. The patent system came in second when ranked against other companies worldwide. So, although Adidas and McDonald's lost cases to protect their branded products, overall, U.S. companies have been very successful in protecting their brands abroad.
The key take-away, perhaps, should be how distinct is your product? Will the brand hold up when challenged abroad, knowing some other, larger companies have been challenged and lost? Speak with an experienced intellectual property attorney to evaluate your branding strength and strategies.]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=492992020-04-23T15:32:40Z2020-04-24T19:25:15ZTips for securing intellectual property
Typically, only essential employees have access to a business’s most confidential data. But even then, remote work can pose new security challenges. Here are a few tips companies can use to mitigate such risks:

Use restricted access: Employees need access to specific systems to perform their jobs. But only grant them access to what they need. If they need access to a specific system they haven't used before, make sure it’s only accessible through your company’s VPN network. Doing so can prevent outside entities from stealing confidential data and using it to their advantage.

Use tracking software: Even before the pandemic, companies relied on tracking software to monitor remote workers’ actions throughout the day. Doing so allows companies to take screenshots of remote employees' workstations at random intervals and watch what systems they're using. This can be beneficial, especially if companies suspect that some workers are putting business trade secrets at risk.

Provide updated training on security policies: Companies usually require workers to take some form of data security training. Now that most employees are performing their duties from home, it's not a bad idea to reinforce the rules.

File for trademarks and patents: Even if a company's intellectual property gets stolen, trademarks and patents can protect them from substantial damage. It can also help them gain recourse.

IP protection should always be a top priority

Employees are the backbone that holds up any company, especially during times of uncertainty. However, even the most cautious and diligent employees can put valuable trade secrets at risk when they’re working from home. But by taking the right steps, you can keep your company’s IP out of the hands of competitors, even while employees are working remote.
]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=493162020-05-06T13:36:43Z2020-04-15T13:29:52Zimplement the right provisions.
Establishing a contract that works for everyone
Here are a couple of things companies should include in contracts:

Clear statement of ownership of company trade secrets: In some cases, businesses can lose their intellectual property rights with vendors if the work contract does not clearly explain who owns the work product. For instance, a business may need to have vendors assist them and provide access to confidential procedures. But by clearly establishing ownership of any system or process the company uses or invents, they can shield the vendor from using those trade secrets with a competitor.

List of consequences for disclosing classified information: On top of procedures and processes, vendors can also gain access to confidential company information through interactions with business employees or email documents. In most cases, businesses will want to recover damages if vendors disclose sensitive information. But to do so, they must clearly state what information is and is not confidential. Companies should also list specific consequences the vendor could face if they breach their contractual obligations.

Before companies enter any of these agreements, they should avoid disclosing anything they deem confidential until the vendor signs the contract. Businesses may also want to place patents on anything they consider valuable. If they don't have protections in place before entering into a contract, companies risk the right to establish IP protections if a vendor breaches the contract.
Protecting IP is a never-ending process
Vendors may come and go as things change over time, and while these business relationships are often essential for companies to meet productivity goals, it's impossible to know how things will transpire with each relationship and vendor interaction. Because of this, companies must draft their vendor contracts in a way that's secure but adaptable.]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=492852020-03-30T14:01:20Z2020-03-30T14:00:04ZTypes of IP encumbrances
An encumbrance on intellectual property should be disclosed and addressed in the seller’s representations and warranties. However, it is possible some go unremarked or potentially remain unknown.
There are many different types of encumbrances, as this Forbes piece explains, including:

Third-party claims that a patent is invalid

Liens on the IP as a result of lending

Infringement claims from third parties

Insufficient documentation regarding IP ownership

Clauses, such as right of first refusal

The use of open-source software

A failure to secure proper registration with all necessary governmental bodies

Addressing encumbrances

Ideally, these complications are discovered well in advance of closing, allowing the buyer and seller to evaluate the terms of the deal with complete knowledge of the facts.
However, encumbrances discovered after the merger or acquisition is completed can sometimes be addressed. The type of relief available will depend upon the circumstances – for example, whether there was a material misrepresentation on the part of the seller versus a non-material one.
This is just a small part of doing due diligence during a merger or acquisition. It is a process that requires experience, tenacity, and an eye for detail. Get it wrong, and you may feel the repercussions long after closing.]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=492602020-03-24T22:54:40Z2020-03-24T19:25:03Zcommon mistakes.

Be proactive in creating an IP strategy

Your start-up needs direction and making the effort to plan your IP strategy out of the gate will benefit you down the line. Filing for patents, researching your market, and developing a coherent and dedicated mission for your business will take time; however, having a clear direction to pursue allows you to focus your efforts and ensure no time is wasted in achieving success.

Always put all agreements down on paper

The core of your business relies on your competitors not having access to your creative solutions and valuable trade secrets you have spent blood and treasure creating. Failing to properly protect those creations could spell the end before you begin. While oral agreement and firm handshake can be appropriate in some business contexts, it’s not enough to protect your IP.
Make sure to limit the amount of information you supply to outside parties to only what is strictly necessary. Additionally, take advantage of nondisclosure agreements in situations where sharing confidential information may be unavoidable, such as when seeking funding.

Don’t wait until an issue arises to get legal counsel

For most entrepreneurs entering into business, getting started is the most expensive part. You may feel inclined to avoid hiring legal counsel until you absolutely need it, instead opting to take on whatever you can yourself. Doing so, however, can have disastrous consequences.
While legal representation may not feel like it’s in your budget, biting the bullet right now can save you time and money down the line and may just save your business. Bilicki Law can help you create the strong groundwork your business needs to be successful. Placing a bandage on a foundation that has begun to crack over time will never provide the same strength and security as hiring a master mason from day one.]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=492732020-03-30T14:08:53Z2020-03-20T19:46:15ZOutsourced manufacturing and increased counterfeiting
Outsourcing manufacturing to other countries, especially China, can cut down on costs drastically for some businesses. By doing so, companies can reduce their overhead costs to offer lower prices or increase their profit margins.
Unfortunately, sending your manufacturing to a foreign country introduces the opportunity for counterfeiting. China, for example, is notorious for knock-off products. With the increased prevalence of 3D printing, creating counterfeit items has become easier than ever.
Not only do US companies have difficulty protecting their IP in other countries, but counterfeit items can also devalue their brand by creating an inferior product. If you plan to outsource your manufacturing, make sure you build a team of experienced and trustworthy professionals abroad with proper oversight at every turn.

The rise of the digital economy

These days, nothing moves faster than the internet. Smartphones have opened up the gateway for near-instant data transfer. With most businesses now relying heavily on network-connected technology, your IP and trade secrets have become increasingly vulnerable.
Many companies offer their employees the opportunity to work remotely; however, this workplace culture shift has made it more difficult for companies to safeguard their IP. Careless employees could unknowingly expose confidential information on public networks or leave themselves open to cyber-attacks.
In this new digital age, every company needs to develop and implement strict cyber-security measures that prevent third parties from easily gaining access to company devices and networks.

Prioritize the safety of your IP

Protecting your intellectual property is paramount to ensuring the health and longevity of your business. Don’t stop short by failing to consult legal counsel at every step. Bilicki Law will help you develop a focused IP strategy and provide valuable guidance as you continue to grow and expand your business.]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=492582020-03-16T22:04:47Z2020-03-18T22:03:32ZHow it can go wrong with founders
Founders of startups often work on ideas and IP long before officially forming their company. This timeline can lead to some potential issues, as the American Bar Association explains.
A business entity does not automatically own IP previously created by its founders. To address this, when a business is founded, the founders usually agree to contribute relevant IP to the company (often in exchange for something like common stock). This ensures the business entity, not any individual, owns the IP.
There may also be issues due to previous employment contracts, which often stipulate any creations by the employee belong to the company. This language should always be reviewed before forging ahead. And if someone who helped create the IP leaves before the company is formed, there may also be some ownership questions to sort out.

Employees and contractors

Just because someone was working for you when they helped create IP does not mean the company automatically owns said IP. While that is generally the way things work, the safest course of action is to explicitly state as much in each employment contract.
This is true for contractors as well. If you bring on a consultant to help develop proprietary software, for example, they may be able to claim ownership of that IP. Just as with the above, a contract can resolve this issue while ensuring everyone involved is on the same page.
Innovative intellectual property is often the lifeblood of a startup. Do not let one error early in the process derail your future ambitions.]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=492532020-03-16T22:07:37Z2020-03-13T13:50:14Zfile suit against that company or entity for patent infringement and receive such benefits as money damages and/or injunctive relief. There is also the possibility of recovering attorneys’ fees in exceptional cases, as well as increased damages, in cases of willful infringement.
Preparing to file
Inventions represent a form of intellectual property that can ultimately produce revenue for you. It makes sense that you want to protect your invention from infringement by others so you can enjoy the fruits of your creativity. However, before you apply to the U.S. Patent and Trademark Office, you need to find out whether your invention actually is patentable. Some questions you should ask yourself include the following:

Does my invention have one or more practical applications?

Have I made a prototype yet?

Have I documented my research and thought process in creating it?

Have I made drawings of it?

Have I invented a new, novel, non-obvious improvement to an existing product or a new product itself?

How much can I reasonably expect to earn from my invention for the next 20 years?

Have I searched the relevant prior art to know if my invention is novel?

Assuming you can answer “yes” to most of the above questions, your invention is likely ready for patenting.
It’s a Race to the Patent Office.
Since the U.S. follows a first to file regime, rather than first to invent, it is more than ever a race to the Patent Office. While there remains a one year grace period in the U.S., it is better to file your U.S. patent application before you begin any commercial activity, particularly if you plan on seeking patent protection outside the U.S. With the advent of micro entity status and prioritized examination, the potential exits to decrease the costs of filing an application, as well as the time to examination and issuance. The average legal fees to prepare a patent application for filing range between $5,000 and $11,000, according to statistics released by the American Intellectual Property Law Association, depending on the complexity of the technology.
In addition, you will have to pay progressive maintenance fees 3 1/2, 7 1/2 and 11 1/2 years after you obtain your patent. As with any invention, you’ll want to understand the pathway to monetizing your patent rights, which may include manufacturing and selling your patented product; selling or licensing your patent rights; and leveraging your patent rights to secure lending or venture capital.]]>On behalf of Bilicki Lawhttps://www.bilickilaw.com/?p=492472020-03-30T14:05:52Z2020-03-12T21:45:56ZThe risks of outsourcing
Each country has its own intellectual property laws. Some have regulations similar to those in the U.S., while others operate under much more lax standards. By outsourcing part of your business, you are exposing your IP to some new risks. According to the World Intellectual Property Organization, that can include:

Breach of contract

Theft or misappropriation of trade secrets

Misuse of IP rights

The loss of IP rights, potentially putting part of the business in peril

Infringement of IP rights

Counterfeit products

Poor or inconsistent quality

These risks should be fully evaluated before choosing to expand internationally.

Protecting IP globally

While there are risks to outsourcing, there are tools to mitigate those risks. In addition to doing everything possible to protect your intellectual property at home, it is crucial you take steps to protect it worldwide. Examples of possible protective measures include:

The utilization of patent, trademark and copyright notices

Extending trademark registration

Dividing your outsourcing efforts, so no single third party has all your IP information

Creating non-disclosure agreements for business partners, based on local laws

Finding legal counsel who knows how to navigate foreign court systems

Extending patent protection

Working with partners across the globe is critical to many companies’ long-term success. But you do not want to jump into international business waters without a plan to protect your valuable IP.]]>